Kabushiki Kaisha Lawson

Trademark Trial and Appeal Board

Aug 25, 2015

No. 79138995 (T.T.A.B. Aug. 25, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: August 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kabushiki Kaisha Lawson
_____

Serial No. 79138995
_____

Peter W. Peterson of DeLio, Peterson & Curcio, LLC,
for Kabushiki Kaisha Lawson.
Darryl M. Spruill, Trademark Examining Attorney, Law Office 112,
Angela Wilson, Managing Attorney.
_____

Before Seeherman, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Kabushiki Kaisha Lawson, a Japanese company (“Applicant”), has filed for an
extension of protection pursuant to Section 66(A) of the Trademark Act, 15 U.S.C.
§ 1141(f) to register on the Principal Register the mark UCHI CAFÉ SWEETS and
design, as shown below.1

1 Application Serial No. 79138995, filed on August 30, 2013, based on International
Registration No. 1183027, issued August 30, 2013.
Serial No. 79138995
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In the application, the mark is described as follows: “The mark consists of the
stylized wording UCHI CAFÉ SWEETS in white colored [letters] against a striped
background consisting [of] alternating brown and black vertical stripes. The letter
‘I’ in Uchi depicts a whisk with whipped cream on the top and appears above Café,
which appears above SWEETS.” The colors brown, black and white are claimed as a
feature of the mark. “The English translation of UCHI in the mark is HOME or
HOUSE.” Applicant has disclaimed exclusive right to use CAFÉ and SWEETS
apart from the mark as shown.
The Examining Attorney has issued a final refusal of registration of the mark
with respect to the following goods and services:
Black tea, English tea; coffee; cocoa; confectionery, namely, ice candies,
ice cream, frozen confectionery, castilla sponge cakes, tarts, caramels,
candies, crackers, sherbets, cream puffs, sponge cakes, chewing gums,
chocolate, doughnuts, nougat, biscuits, popcorn and rice crackers;
bread; buns; unroasted coffee beans (the entirety of Applicant’s goods
in Class 30);

Non-alcoholic carbonated beverages; fruit juices; whey beverages;
vegetable juices and beverages (the entirety of Applicant’s goods in
Class 32);

Retail store services and wholesale store services featuring a variety of
goods in each field of clothing, foods and beverages, and living ware,
carrying all goods together; retail store services and wholesale store
services featuring foods and beverages; retail store services and
wholesale store services featuring liquor; retail store services and
wholesale store services featuring meat; retail store services and
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wholesale store services featuring sea food; retail store services and
wholesale store services featuring vegetables and fruits; retail store
services and wholesale store services featuring confectionery; retail
services [sic] store services and wholesale store services featuring
bread and buns; retail store services and wholesale store services
featuring rice and cereals; retail store services and wholesale store
services featuring milk; retail store services and wholesale store
services featuring carbonated drinks, non-alcoholic and non-alcoholic
fruit juice beverages; retail store services and wholesale store services
featuring tea, coffee and cocoa; retail store services and wholesale store
services featuring processed food (Class 35); and

Providing foods and beverages (the entirety of Applicant’s services in
Class 43).2

Registration was refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark UCHI in
standard characters, registered for “cafe-restaurants; carry-out restaurants; hotel,
bar and restaurant services; restaurant and bar services; restaurant services;
restaurants; self-service restaurants; take-out restaurant services” in Class 43.3 The

2 The application includes additional services in Class 35 which are not the subject of the
refusal, namely: Advertisement and publicity services by television, internet, radio, mail,
posters, hanging displays, banners, monitors inside and outside of shops; retail store
services and wholesale store services featuring woven fabrics and beddings; retail store
services and wholesale store services featuring clothing; retail store services and wholesale
store services featuring footwear; retail store services and wholesale store services
featuring bags and pouches; retail store services and wholesale store services featuring
personal articles in the nature of false nails, false eyelashes, ferrules of metal for canes and
walking sticks, shaving cases, pedicure sets, eyelash curlers, manicure sets, ear picks,
personal ornaments, jewelry, vanity cases sold empty, umbrellas, walking sticks, canes,
metal parts of canes and walking sticks, cane handles, hand fans, pocket mirrors, pocket
mirror bags, cosmetic and toilet utensils (other than electric tooth brushes), woven textile
goods for personal use, garters, sock suspenders, braces for clothing (suspenders),
waistbands, belts (clothing), armband for holding sleeves, insignias for wear (not of precious
metal), buckles for clothing, badges for wear (not of precious metal), brooches for clothing,
special sash clips for obi obi-dome, bonnet pins (not of precious metal), ornamental adhesive
patches for jackets, brassards, hair ornaments, buttons, false beards, false moustaches, hair
curlers (non-electric).
3 Registration No. 3722422, issued December 8, 2009.
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registration includes the translation statement, “The English translation of the
word "UCHI" in the mark is house or home.”
Applicant has appealed. Both Applicant and the Examining Attorney have filed
briefs.
We affirm the refusal to register for all classes.
I. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
A. The similarity of dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
First, we point out that Applicant is laboring under a misapprehension about the
cited mark. Applicant has devoted much of its argument to its contention that the
registered mark is the stylized word UCHI, in lower case letters, and that the
Examining Attorney has erred in characterizing the mark as being in standard
characters. However, the copy of the registration, taken from the USPTO’s
electronic database and made of record in the December 25, 2013 Office action,
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clearly identifies the mark as being in standard characters. Although the mark is
displayed in lower case, as shown below, standard character marks may be so
displayed. See Trademark Rule 2.52(a), TMEP §§ 807.03, 807.03(a), 807.03(b).

Indeed, because a standard character mark may be depicted in any font style,
color or size, Applicant’s arguments regarding the differences in the depictions of
the word UCHI in the two marks are not relevant; the Registrant may depict its
mark in the same type style and color as UCHI in Applicant’s mark, and therefore
these words must be considered identical in appearance. See In re Viterra, 671 F.3d
1358, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012).
Second, Applicant invokes the doctrine of foreign equivalents in a rather strange
manner. In determining likelihood of confusion, if one mark is in a foreign language
and the other mark is in English, the foreign language mark is normally translated
into English to consider the meaning of the mark (although there are some
exceptions that are not applicable here). But in the present case, the word UCHI in
both marks is in the same foreign language, and both have the same translation,
“house or home.” As part of its argument that the doctrine of foreign equivalents is
applicable to the present situation, Applicant cites Lar Mor International, Inc., 221
USPQ 180 (TTAB 1983). However, although that same argument was made by the
applicant in that case, the Board never endorsed this approach in the opinion; on
the contrary, the Board, citing J. McCarthy, Trademarks and Unfair Competition
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¶23:14 (1973), pointed out that “In fact, one legal scholar has suggested that if the
marks being compared are both foreign words, the doctrine of foreign equivalents
may not be applicable, and that the comparison should be based on phonetic
similarity of the marks to the English-speaking customer. Id. at 181. Thus,
although we look at the translation to understand the meaning that UCHI would
have to consumers who understand Japanese, there is no need to consider the
marks under the doctrine of foreign equivalents. They have identical meanings on
their face and according to their translation statements.
We also disagree with Applicant’s argument that its mark conveys a unique
impression because it is comprised of words from three different languages, i.e., that
UCHI is Japanese, CAFÉ is French, and SWEETS is English. The Examining
Attorney has submitted evidence that “café” is a recognized English word having
the meaning of, inter alia, “a small restaurant where you can get simple meals and
drink (such as coffee)” and “a usually small and informal establishment serving
various refreshments (as coffee); broadly: RESTAURANT.”4 Thus, consumers
viewing Applicant’s mark will consider the word UCHI as having the greater
source-indicating significance, and the words CAFÉ and SWEETS as describing the
services and goods provided by Applicant under the mark UCHI.
We also find that the pictorial elements in Applicant’s mark are not sufficient to
distinguish the marks. The “striped background consisting [of] alternating brown
and black vertical stripes” is, as Applicant itself has described it, a background for

4 Merriam Webster dictionary, www. merriam-webster.com, December 25, 2013 Office
action, p. 7.
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the words, and is not likely to be noticed by consumers or viewed as having source-
indicating significance. See In re Dixie Restaurants Inc., 41 USPQ2d at 1534.
Applicant’s mark also has a design of a whisk with whipped cream instead of the “I”
in UCHI, but again, the design is not so significant as to be distinguishing. The
design would still clearly be understood as the letter “I.” Further, as has been
frequently observed, “In the case of a composite mark containing both words and a
design, ‘the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed.’” In re Viterra, 101 USPQ2d 1908, quoting CBS Inc.
v. Morrow, 708 F.2d 1579 218 USPQ 198, 200 (Fed. Cir. 1983). Thus, if a mark
comprises both a word and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That would certainly be the
case here; consumers will refer to the mark by the words, and not as the mark with
the whisk and whipped cream and striped background design. For the reasons
stated above, we find that UCHI is the dominant element of Applicant’s mark, and
we therefore give it more weight in our comparison of the marks. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (there is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties).
Because both marks contain the identical word UCHI, and because the
additional descriptive and/or generic elements and the minor design elements in
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Applicant’s mark have little or no source-indicating significance, we find that the
marks are similar in appearance. The marks are also similar in pronunciation and
meaning, in that the word UCHI in Applicant’s mark is identical to the Registrant’s
mark UCHI, and the descriptive and/or generic elements CAFÉ and SWEETS do
not serve to distinguish the marks. The marks also convey the same commercial
impression. Moreover, the word CAFÉ in Applicant’s mark, which is depicted in the
same font and size as UCHI, increases the likelihood of confusion, because it
suggests that Applicant’s name is UCHI CAFÉ, and that Applicant renders café
services; the cited registration is also for café services. Thus, Applicant’s mark, used
in connection with the food and beverage items identified in Classes 30 and 32, and
the retail store services for the sale of food and beverage items in Class 35, further
suggests that these goods and services come from or are associated with the same
source that renders café services.
After considering the marks in terms of their appearance, pronunciation,
connotation and commercial impression, we find that they are similar. Moreover, we
keep in mind that similarity is not a binary factor but is a matter of degree. In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003). In this
case, because of the identical nature of the word UCHI, and the lack of
distinctiveness of the additional elements in Applicant’s mark, we find that this du
Pont factor strongly favors a finding of likelihood of confusion.
In reaching this conclusion we have considered the numerous third-party
registrations submitted by Applicant of marks that include the word HOME or
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HOUSE. Third-party registrations are not evidence of use of the marks, or that the
public is familiar with them. See Olde Tyme Foods, Inc. v. Roundy’s Inc. 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). However, they can be used to show the
sense in which a mark is used in ordinary parlance, and thereby prove that a mark
or portion thereof has a normally understood and well recognized descriptive or
suggestive meaning, leading to the conclusion that it is relatively weak. See Juice
Generation, Inc. v. GS Enters. LLC, __F.3d__, 115 USPQ2d 1671, 1675 No. 2014-
1853 (Fed. Cir. July 20, 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., __F.3d__, __USPQ2d_, No. 2014-1789
(Fed. Cir. August 19, 2015). In the vast majority of the third-party registrations
containing the word HOME or HOUSE for restaurant services, the term is used to
indicate that a restaurant is known for a particular product. See, for example,
Registration Nos. 4027145 for HOME OF THE BOTTOMLESS CUP, 2623831 for
HOME OF THE WARM ‘N FRESH DONUT, 2925540 for HOUSE OF DONUTS and
design and 1302940 for HOUSE OF PIES. There are some registrations that do not
fit into this pattern, such as No. 4304669 for HOME RUN INN, No. 3262085 for
HOME SLICE PIZZA, No. 2702448 for HOME SUITE HOME, No. 4345993 for
HOME TEAM GRILL and No. 3435786 for HOME TURF SPORTS BAR, but the
“different” meaning of HOME in each of these registrations does not indicate that
HOME or HOUSE has a particular significance for restaurant services. In short, the
third-party registrations do not show that HOME or HOUSE per se has a
suggestive or descriptive meaning for restaurant services. More importantly, the
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registered mark is UCHI, not HOME or HOUSE. There are no third-party
registrations of record for UCHI marks, and despite the fact that UCHI translates
as HOME or HOUSE, Registrant’s UCHI mark conveys a very different impression
from these words. Therefore, we treat Registrant’s mark UCHI as a distinctive
mark and, as such, the cited registration is entitled to a broad scope of protection for
restaurant services.
B. The similarity or dissimilarity and nature of the goods or services.
The services as identified in the cited registration are “cafe-restaurants; carry-
out restaurants; hotel, bar and restaurant services; restaurant and bar services;
restaurant services; restaurants; self-service restaurants; take-out restaurant
services” in Class 43. Because Applicant has applied to register its mark in four
classes, and because each class in a multi-class application is essentially treated as
a separate application, we will discuss the goods and services in each class
separately.
Class 43:
Applicant’s Class 43 services are identified as “providing foods and beverages.”
Although Applicant has not used the exact words in its identification as the
Registrant has, we find that these services encompass the various restaurant
services identified in the cited registration, and therefore the services are, in part,
legally identical.
Applicant has attempted to limit the Registrant’s identification by
characterizing the Registrant’s business as a “Japanese restaurant” and as
Serial No. 79138995
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rendering “take-out restaurant services.” Brief, 6 TTABVUE 16, 17. However, it is
well settled that the question of likelihood of confusion must be determined based
on an analysis of the mark as applied to the goods and/or services recited in an
applicant’s application vis-à-vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods and/or services to be.
See In re Dixie Restaurants Inc., 41 USPQ2d at 1534. Thus, Applicant’s services in
Class 43 are, in part, legally identical to those in the cited registration.
This du Pont factor strongly favors a finding of likelihood of confusion.
Class 35:
Applicant’s services identified in Class 35 include retail store services featuring
foods and beverages; many of the services listed in the identification are merely an
elaboration of the food and beverage items that are the subject of the retail store
services, e.g., retail store services featuring tea, coffee and cocoa. In order to show
that Applicant’s identified retail store services are related to the Registrant’s
services, the Examining Attorney has submitted third-party registrations in which
parties have adopted a single mark for both types of services.5 Third-party
registrations which individually cover a number of different items and which are
based on use in commerce serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). The third-party registrations for retail store
services in the field of food, and restaurant services, include:

5 Office action mailed December 25, 2013. We have given no probative weight to the third-
party registrations which have been cancelled.
Serial No. 79138995
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Registration No. 3642861 for PORTLAND COFFEE HOUSE for, inter
alia, retail store services featuring ground and whole bean coffee, tea,
cocoa, bottled water and other non-alcoholic drinks, including soft
drinks and fruit juices, prepared coffee and tea, sandwiches, baked
goods including muffins, biscuits, cookies and pastries, candy and
confections (Class 35) and café and carry out restaurant services
(Class 43);

Registration No. 4404663 for PHILZ COFFEE ONE CUP AT A TIME
for, inter alia, retail outlets featuring ground and whole bean coffee,
tea, cocoa, muffins, biscuits, cookies, pastries, cakes, breads,
sandwiches and prepared foods, confectionery items, ready-to-eat food
stuffs, juices and soft drinks (Class 35) and coffee houses and cafes
(Class 43);

Registration No. 4180905 for SEATTLE’S BEST COFFEE for, inter
alia, retail store services in the field of coffee, tea, cocoa, packaged and
prepared foods, retail store services featuring carry out foods and
beverages (Class 35) and restaurant, café, cafeteria, carry out
restaurant and take out restaurant services (Class 43); and

Registration No. 4413094 for HOME OF THE ORIGINAL MEATBALL
IN A CUP for concession stands featuring meatballs (Class 35) and
restaurant services (Class 43).6

In addition to the third-party registrations, we note that there is a fine line
between restaurant services and the retail sale of food. For example, the
registration for SEATTLE’S BEST COFFEE includes “retail store services featuring
carry out foods and beverages”; the registration for PHILZ COFFEE ONE CUP AT
A TIME is for retail outlets that feature sandwiches and prepared foods and ready-
to-eat food stuffs, and the registration for PORTLAND COFFEE HOUSE is for
retail outlets that feature prepared coffee and tea, and sandwiches. The retail sales
of these prepared foods are very similar, if not the same, as take-out restaurant

6 This third-party registration was submitted by Applicant, Response filed June 30, 2014,
p. 167.
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services. In addition, numerous other third-party registrations that include
restaurant services also include food items “for consumption on or off the premises,”
essentially food that is “take-out” food from a restaurant. See, for example,
Registration No. 4216737, which includes both “pizza sold for consumption on or off
the premises” and “restaurant and carryout food services”7; Registration No.
1476111 for “frozen desserts, namely ice cream for consumption on or off the
premises” and “restaurant services”8; Registration No. 1302940 for “pies of all kinds
for consumption on or off the premises” and “restaurant and carryout restaurant
services”9; Registration No. 3569680 for, inter alia, bread, sandwiches, cookies,
coffee, tea, for consumption on or off the premises” and “restaurant services, carry-
out and take-out restaurant services.”10
The greater the degree of similarity between the marks, the lesser the degree of
similarity between the goods or services that is necessary to support a finding of
likelihood of confusion. Bd. Of Regents, Univ. of Tex. Sys. V. S. Ill. Miners, LLC, 110
USPQ2d 1182, 1189 (TTAB 2014). In this case, as previously discussed, the marks
are extremely similar. Applying this principle to our consideration of the du Pont
factor of the similarity or dissimilarity of the services, we find that, because of the
very close relationship between retail sales of prepared food and carry-out
restaurant services, supported by the third-party registrations discussed above, this

7 Submitted by Applicant with June 30, 2014 response, p. 183.
8 Id., p. 258.
9 Id., p. 264.
10 Office action mailed December 25, 2013, p. 11-12.
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factor favors a finding of likelihood of confusion with respect to the services in
Class 35.
Class 30:
The following third-party registrations show that a single mark has been
registered for some of the goods listed in Applicant’s identification of goods in
Class 30, and the restaurant-type services listed in the cited registration:
Registration No. 4415127 for TIM HORTONS CAFE & BAKE SHOP
for, inter alia, donuts, muffins, cookies, pastries, cakes, tea biscuits,
bagels, coffee, tea, hot chocolate, coffee beans and ground coffee beans
(Class 30), and café featuring coffees and baked goods, sit-down and
take-out restaurant services (Class 43);

Registration No. 4170195 for YOUR NEIGHBORHOOD GATHERING
PLACE for, inter alia, cookies, pastries, cake and ice cream (Class 30)
and for restaurant services (Class 43);

Registration No. 4442188 for TAPIOCA EXPRESS for, inter alia,
coffee, tea, cocoa, frozen desserts consisting of fruit and cream, frozen
desserts consisting of flavored ice blocks with toppings, frozen yogurt
confections, cookies, candy (Class 30), and restaurant services, take-
out restaurant services and café services;

Registration No. 4404663 for PHILZ COFFEE ONE CUP AT A TIME
for, inter alia, coffee beans, coffee, tea (Class 30) and coffee shops and
cafes (Class 43);

Registration No. 4180905 for SEATTLE’S BEST COFFEE for, inter
alia, ground and whole bean coffee, cocoa, herbal and non-herbal tea,
muffins, biscuits, cookies, pastries and breads, candy (Class 30), and
restaurant, cafe, cafeteria, carry out restaurant and take out
restaurant services (Class 43);

Registration No. 4027145 for HOME OF THE BOTTOMLESS CUP for
coffee (Class 30) and restaurant services (Class 43);11

11 Submitted by Applicant with June 30, 2014 response, p. 129.
Serial No. 79138995
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Registration No. 1983873 for T.J. CINNAMONS and design for, inter
alia, bakery goods (Class 30) and restaurant services (Class 42);12

Registration No. 2623831 for HOME OF THE WARM ‘N FRESH
DONUT for donuts, bakery goods and coffee (Class 30) and restaurant,
carry out and take out food services (Class 42);13

Registration No. 2925540 for HOUSE OF DONUTS and design for,
inter alia, doughnuts, muffins, croissants, pastries, bakery products,
bakery desserts (Class 30) and restaurant and cafeteria services (Class
42)14;

Registration No. 1476111 for HOUSE OF FLAVORS for ice cream for
consumption on or off the premises (Class 30) and restaurant services
(Class 42)15;

Registration No. 1302940 for HOUSE OF PIES for pies of all kinds for
consumption on or off the premises (Class 30) and restaurant services
(Class 42)16; and

Registration No. 4470956 for HOUSE FOODS for, inter alia, tea,
sherbet, frozen confectionery (Class 30) and restaurant services (Class
43).17

We are aware that merely because a particular food can be served in a
restaurant is not a sufficient basis for finding that goods and services are related,
and that “something more” is required. See In re Coors Brewing Co., 68 USPQ2d at

12 This third-party registration was submitted by Applicant, Response filed June 30, 2014,
p. 136. The restaurant services are classified in Class 42, rather than Class 43, because the
registration issued in 1996, prior to the reclassification of restaurant services in Class 43.
13 Id. at p. 139. This registration, too, issued prior to the reclassification of restaurant
services in Class 43.
14 Id. at p. 255. This registration issued prior to the reclassification of restaurant services in
Class 43.
15 Id. at p. 258, also cited at footnote 8. This registration issued prior to the reclassification
of restaurant services in Class 43.
16 Id. at p. 264. This registration issued prior to the reclassification of restaurant services in
Class 43.
17 Id. at p. 318.
Serial No. 79138995
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1064; Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641
(CCPA 1982). In this case, the third-party registrations, listed above, provide that
“something more,” showing that third parties have adopted a single mark for both
the food products listed in Applicant’s application and restaurant services. As a
result, when consumers familiar with the Registrant’s restaurant services offered
under the mark UCHI encounter these food products sold under the highly similar
mark UCHI CAFÉ SWEETS and design, with the inclusion of CAFÉ further
heightening the connection with a restaurant, they are likely to believe that the
goods come from the same source as the restaurant services.
This du Pont factor favors a finding of likelihood of confusion with respect to the
goods in Class 30.
Class 32:
The Examining Attorney made the first five third-party registrations of record
with the December 25, 2013 Office action; the sixth registration was submitted by
Applicant.
Registration No. 3257813 for ANIMO JUICE for, inter alia, fruit juices
(Class 32) and restaurant services (Class 43);

Registration No. 4415127 for TIM HORTONS CAFÉ & BAKE SHOP
for, inter alia, fruit juices, soft drinks, bottled water (Class 32) and sit-
down and take-out restaurant services (Class 43);

Registration No. 4170195 for YOUR NEIGHBORHOOD GATHERING
PLACE for, inter alia, soft drinks and fruit juices and restaurant
services;

Registration No. 4442188 for TAPIOCA EXPRESS for, inter alia, fruit
juices, fruit beverages, soda pops [sic], bottled water (Class 32) and
Serial No. 79138995
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restaurant services, take-out restaurant services and café services
(Class 43);

Registration No. 4180905 for SEATTLE’S BEST COFFEE for, inter
alia, fruit juice based beverages, fruit drinks (Class 32) and
restaurant, cafe, cafeteria, carry out restaurant and take out
restaurant services (Class 43); and

Registration No. 4470956 for HOUSE FOODS for, inter alia, soft
drinks (Class 32) and restaurant services (Class 43).18

For the same reasons we have discussed in connection with Applicant’s Class 30
goods, we find that the du Pont factor of similarity/dissimilarity of the goods and
services favors a finding of likelihood of confusion with respect to the Class 32
services.
C. The similarity or dissimilarity of established, likely-to-continue trade
channels.
Because the application in Class 43 is for services that are identical in part to
the Registrant’s identified services, and because neither identification includes any
restrictions, the channels of trade must be deemed to be legally identical. See In re
Viterra, 101 USPQ2d at 1908. As for the other classes of goods and services in
Applicant’s application, although the Examining Attorney states that the channels
of trade du Pont factor is one of the most relevant, brief, 8 TTABVUE 8, he did not
submit any evidence regarding the channels of trade. Further, while he contends
that the third-party registrations demonstrate that the goods and retail store
services emanate from a single source, the registrations do not show that the goods
and services move in the same channels of trade as restaurant services. Nor does

18 Id.
Serial No. 79138995
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the presumption that the goods and services move in all normal channels of trade,
Brief, 8 TTABVUE 22, demonstrate what those channels of trade are. What we can
conclude from the identifications is that the goods and services are consumer items
that would be sold or offered to the general public, and therefore that the same
classes of consumers would encounter both Applicant’s goods and services and the
Registrant’s services. To this extent, this du Pont factor favors a finding of
likelihood of confusion.
D. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.
Although not discussed by either Applicant or the Examining Attorney, we
consider this factor to be relevant to our determination. The involved goods and
services, as previously discussed, are sold to the general public. Further, many of
the goods, such as tea, doughnuts and carbonated beverages, are inexpensive items
that may be purchased on impulse. Even the decision to enter a retail store to
purchase fruits or vegetables or candy can be made on impulse, and without careful
consideration of the mark for such goods or services. Accordingly, we find that this
du Pont factor, too, favors a finding of likelihood of confusion.
E. The number and nature of similar marks in use on similar goods.
Applicant has listed this as one of the relevant du Pont factors in this case.
However, Applicant has not submitted any evidence of use of similar marks on
similar goods and services. Applicant relies on the third-party registrations it
submitted as support for this factor, but as we have said in discussing the
registrations, they are not evidence of use of the marks shown therein. We reiterate
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from that discussion that there are no third-party registrations for UCHI marks,
and the registrations containing the English words HOME or HOUSE are very
different in commercial impression. Because we have no evidence of use of third-
party marks, we treat this factor as neutral.
F. The extent of potential confusion, i.e., whether de minimis or
substantial.
Because the goods and services are ordinary consumer items which may be
frequently purchased by the public at large, the extent of potential confusion, i.e.,
the number of people who may be confused, is substantial. This factor favors a
finding of likelihood of confusion.
G. The remaining du Pont factors.
To the extent that any of the remaining du Pont factors are relevant, we find
that they are neutral.
II. Conclusion
After reviewing all of the relevant du Pont factors, we find that Applicant’s mark
UCHI CAFÉ SWEETS and design, used for the goods and services that are the
subject of this appeal, is likely to cause confusion with the mark UCHI in the cited
registration.
Decision: The refusal to register Applicant’s mark UCHI CAFÉ SWEETS and
design is affirmed with respect to all of the identified goods and services in Classes
30, 32 and 43, and the following services in Class 35:
Retail store services and wholesale store services featuring a variety of
goods in each field of clothing, foods and beverages, and living ware,
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carrying all goods together; retail store services and wholesale store
services featuring foods and beverages; retail store services and
wholesale store services featuring liquor; retail store services and
wholesale store services featuring meat; retail store services and
wholesale store services featuring sea food; retail store services and
wholesale store services featuring vegetables and fruits; retail store
services and wholesale store services featuring confectionery; retail
services store services and wholesale store services featuring bread
and buns; retail store services and wholesale store services featuring
rice and cereals; retail store services and wholesale store services
featuring milk; retail store services and wholesale store services
featuring carbonated drinks, non-alcoholic and non-alcoholic fruit juice
beverages; retail store services and wholesale store services featuring
tea, coffee and cocoa; retail store services and wholesale store services
featuring processed food.
After the period for appeal concludes, the application will be passed to
publication for the remaining services in Class 35, as listed in footnote 2. As noted
above, the description of the mark appears to have omitted the words “letters” and
“of”; if Applicant wishes to correct the description, it should, prior to the expiration
of the two-month appeal period, file an amendment to the description with the
Examining Attorney through the TEAS filing system.